T 0079/10 (Information access on a portable device/RESEARCH IN MOTION) of 14.12.2010

Summary of Facts and Submissions

I. This appeal is against the decision of the examining division refusing European patent application No. 06117187.2 (publication number EP 1 848 228 A).

II. The refusal was based on the grounds that the subject-matter of claim 1 of each of a main request and a first auxiliary request was not new (Article 54 EPC) and that the subject-matter of claim 1 of each of second to fourth auxiliary requests did not involve an inventive step (Article 56 EPC) having regard to the disclosure of D7 (WO 01/41458 A).

III. With the statement of grounds of appeal the appellant filed claims of a main request and first to sixth auxiliary requests and requested that the decision be set aside and a patent be granted on the basis of the claims of the main request or, failing that, on the basis of the claims of one of the first to sixth auxiliary requests. Arguments in support were also submitted. Oral proceedings were conditionally requested.

IV. In a communication annexed to a summons to oral proceedings the board raised, without prejudice to its final decision, objections against claim 1 of each one of the requests under Article 52(1) EPC in combination with Article 56 EPC (lack of inventive step).

V. In response to the board's communication, the appellant filed an amended first auxiliary request, withdrew the third auxiliary request, and renumbered the fourth to sixth auxiliary requests to third to fifth auxiliary requests, respectively.

VI. Oral proceedings were held on 14 December 2010 in the course of which the appellant replaced all its pending requests by a new sole request and requested that the decision under appeal be set aside and a patent be granted on the basis of the claims, i.e. claims 1 to 41, of this sole request.

At the end of the oral proceedings, after deliberation, the board's decision was announced.

VII. Claim 1 of the sole request reads as follows:

"A portable device (140) capable of storing information and which may be placed in a locked condition, the portable device comprising:

a man-machine interface (149);

a subscriber information module 'SIM' (152) for storing at least emergency information comprising a plurality of ICE entries;

a display (142); and

a processor (150) coupled to the display (142) and to the man-machine interface (149), and comprising an access module (28) for providing a user with access only to the emergency information in the SIM in response to a repeated pressing of a predetermined key by the user even if the portable device is in the locked condition, wherein the processor is adapted to cause, in response to the repeated pressing of the predetermined key by the user even if the portable device is in the locked condition, the display (142) to display the plurality of ICE entries upon the user's access to the emergency information;

wherein during the user's access to the emergency information while the portable device is in the locked condition, other information stored on the portable device remains protected.".

The request further includes an independent method claim 21 and an independent computer program product claim 41. In view of the board's conclusion with respect to claim 1, claims 21 and 41 are not reproduced here.

Reasons for the Decision

1. Articles 84 and 123(2) EPC

1.1 Present claim 1 is based on a combination of independent and dependent claims as filed, supplemented by features taken from the description as filed.

1.2 More specifically, claim 1 is based on independent claim 10, dependent claims 13 and 14 (which further specify that the predetermined operation performed on the man-machine interface may be a repeated pressing of a predetermined key), dependent claim 17 (which specifies that the memory is a subscriber information module (SIM)), and dependent claims 22 and 25 (which specify that the display for displaying in-case-of- emergency (ICE) information is capable of displaying a plurality of ICE entries), all as originally filed.

The features taken from the description as filed are the following (reference being made to the application as published):

- the portable device may be placed in a locked condition (paragraph [0041]);

- the access module is for providing access only to the emergency information in the SIM in response to the repeated pressing of the predetermined key by the user even if the portable device is in the locked condition (paragraphs [0042] and [0043]), in which case other information stored on the portable device remains protected (cf. paragraph [0041] and [0054], point 8); and

- the processor is adapted to cause the display to display the plurality of ICE entries (cf. [0027] and Fig. 4b, display screen 82a).

1.3 Claim 1 therefore complies with the requirement of Article 123(2) EPC.

1.4 Further, claim 1 does not give rise to any objections under Article 84 EPC.

2. Novelty - claim 1

2.1 D7 discloses, using the language of claim 1, a portable device, i.e. a handset or mobile telephone 100 (Fig. 1), which is capable of storing information in a memory 310 (Fig. 5) and which may be placed in a locked condition (the abstract, lines 1 to 4). The mobile telephone 100 includes a man-machine interface, i.e. a keypad 105, a memory 310 for storing at least emergency information including a plurality of in-case-of-emergency entries, i.e. a list of emergency numbers (e.g., "911", "*FIRE", and "*POL", see page 2, line 24, to page 3, line 1, and page 7, line 26, to page 8, line 1), a display 110 (Fig. 1), and a processor, i.e. a controller 300, coupled to the display 110 and the man-machine interface 105 (Fig. 5) and including an access module for providing a user with access only to the emergency information in the memory in response to a repeated pressing of a predetermined key (i.e. twice the "1"-key in case of calling "911" (page 5, lines 24 and 25)) by the user even if the mobile telephone is in the locked condition (page 8, lines 1 to 4 and 8 to 10).

According to D7, when an emergency situation arises and a caller enters an emergency number while the mobile telephone is in a locked condition, the entered value, e.g. 911, is compared with the above-mentioned list of emergency numbers stored in the memory and if the entered number is on the list, the mobile telephone immediately places the emergency call even though the telephone is locked, thereby giving the user access to the emergency number stored in the memory, whilst other information stored on the mobile telephone remains protected (abstract and page 8, lines 8 to 10; "to make an emergency call only").

2.2 The subject-matter of claim 1 differs from the mobile telephone disclosed in D7 in that according to claim 1:

i) the memory is a subscriber information module "SIM"; and

ii) the processor is adapted to cause, in response to the repeated pressing of the predetermined key by the user even if the portable device is in the locked condition, the display to display the plurality of ICE entries upon the user's access to the emergency information.

2.3 Consequently, at least having regard to the disclosure of D7, the subject-matter of claim 1 is novel (Article 54 EPC).

3. Inventive step - claim 1

3.1 With respect to the above-mentioned feature ii) the board notes that it was common at the priority date of the application in suit that when a user of a mobile telephone enters a telephone number, the telephone number is shown on the mobile telephone's display. This is also suggested in D7, since in connection with the detailed description of preferred embodiments, in which a user of a mobile telephone 100 makes an emergency 911 call by using the plurality of keys 105

FORMULA/TABLE/GRAPHIC

is shown on the display 110 (page 5, lines 24 and 25, and Figures 1 and 3).

3.2 However, within the context of dialling a single emergency number as disclosed in D7, there would be no reason to show on the display any further telephone number in addition to the dialled number. Hence, D7 neither discloses nor suggests adapting the processor 300 to cause the display 110 to display a plurality of telephone numbers, more specifically the plurality of ICE entries, in response to the repeated pressing of the predetermined key by the user even if the portable device is in the locked condition.

3.3 Having regard to the disclosure of D7, a person skilled in the art would therefore, without the exercise of inventive skill, not have arrived at a portable device as disclosed in D7, in which the processor is modified such as to include the above-mentioned feature ii).

3.4 Consequently, at least having regard to the disclosure of D7, the subject-matter of claim 1 involves an inventive step (Article 56 EPC).

4. In view of the reasons given above, the decision under appeal is to be set aside.

5. Remittal

5.1 The decision under appeal dealt with lack of novelty and inventive step only in respect of the subject-matter of claim 1 of each one of the requests then on file and only having regard to the disclosure of D7. It is silent on the question of whether or not any one of the remaining prior art documents on file is relevant to the claimed subject-matter.

Further, the decision under appeal is silent on the patentability of the subject-matter of the two further independent claims of each one of the requests then on file, which are directed to a method and a computer program product, respectively. As mentioned above, the present request also includes a further independent method claim 21 and an independent computer program product claim 41.

5.2 In view of the above, the board considers it appropriate to remit the case to the first instance for further prosecution of the application, in accordance with Article 111(1) EPC.

ORDER

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the department of first instance for further prosecution.